Taco Tuesday Trademark Troubles
Let's taco 'bout what happens when a phrase becomes too generic
We've had a recent rash of Taco Bell runs lately. Most of these fall on Tuesdays. "Taco Tuesday" was a phrase that I learned about in law school, when the local Mexican restaurants would price tacos cheaply to cater to the student population. I always thought it was one of those common phrases. It's so ingrained in my vernacular that we eat tacos on Tuesdays.
And that's the exact reason that Taco Bell has taken on Taco John, who owns the trademark to "Taco Tuesday." It filed a Petition – yes, on a Tuesday – on May 16, 2023 to cancel the registered trademark. The reasons cited were "abandonment" and "become too generic" under Trademark Act Section 14(3).
Taco John has approximately 400 locations in 23 states, and holds a registered trademark in all of them except New Jersey.
What is a Trademark?
A trademark is a symbol, word, phrase, or design that identifies and distinguishes the source of goods or services from those of others. In simpler terms, a trademark is a brand name or logo that is used to identify a particular company or product.
Trademark laws were put in place to protect the intellectual property rights of businesses and individuals. Registering a trademark gives the owner exclusive rights to use that trademark in connection with their products or services. This means that nobody else can use the same trademark or something similar to it in a way that might confuse consumers. If someone else does use the trademark, the owner of the trademark can take legal action against them.
Many times, you can see the "TM" symbol after a trademarked slogan, phrase, or logo. Two of the most popular trademarks is the Coca Cola wave and the golden "M" arches for McDonald's.
The History of Taco Tuesday and Its Rise In Popularity
In 1989, one of Taco John's franchise owners (David Olsen) noticed that restaurants were slower on Sundays and Tuesdays. That person coined the phrase "Taco Twosdays," for a special of two tacos for 99 cents. Ten years later, Taco John registered "Taco Tuesdays."
Putting aside Taco John's revisionist history, Tortilla Flats restaurant in Laguna Beach, California (now-defunct) applied for a state trademark for “Taco Tuesday” in California in 1984.
In recent years, social media contributed to the popularity of #TacoTuesday, with Instagrammers sharing their meals.
Why Does Taco John Have a Trademark in 49 States and Not New Jersey?
Gregory's Restaurant and Bar, located in Somers Point, New Jersey, introduced Taco Tuesdays in 1978. This special day of the week was the only opportunity for Greg Gregory, the owner, to include tacos on the menu (because he had a beef ... a taco beef) with his other family members about tacos on the menu.
Gregory decided to trademark the phrase "Taco Tuesday" in 1982 at the suggestion of a college professor.
The Trademarking of a Common Phrase
The trademarking of common phrases is not a new phenomenon. You might remember that Paris Hilton trademarked the phrase "That's hot." (Imho, the trademarking of that phrase is absurd, at best.)
One of the most famous examples of this is Apple's trademarking of the phrase "There's an app for that." The company registered the trademark in 2010, and it has been used in countless advertisements and promotions. However, many people argue that the phrase was already in common use and that Apple should not have been allowed to trademark it.
Another example is the trademarking of the phrase "Let's Get Ready to Rumble" by boxing announcer Michael Buffer. Buffer registered the trademark in 1992 and has been using it in his announcing ever since. However, many people argue that the phrase was already in common use and that Buffer should not have been able to trademark it.
What Happens When a Phrase Becomes Too Common?
When a phrase becomes too common, it can be difficult to enforce a trademark on it. This is because trademarks are only valid if they are used to distinguish one company's goods or services from another's. If a phrase becomes so common that it is used by everyone, then it can no longer be used to distinguish one company's products from another's.
This is part of the reason that Taco Bell filed to cancel the trademark. They are arguing that the phrase has become so ubiquitous that it is used by countless restaurants and bars, and even by individuals on social media. It has lost its ability to distinguish Taco John's products from those of other companies. To that end, I agree. I haven't even see a Taco John before, yet every Mexican restaurant in my area has a Taco Tuesday.
Does Taco John Enforce Its Trademark?
The other question is whether Taco John enforces its trademark. If it does not, then the trademark registrant could be said to abandon its trademark.
Some people have pointed out that Taco John's could be seen as selectively enforcing its trademark. The company has not taken legal action against every business that uses the phrase "Taco Tuesday." Instead, it has only gone after businesses that it sees as direct competitors.
This has led some people to question whether Taco John's trademark is really valid. If the company is not enforcing it consistently, then it could be argued that it has abandoned its trademark rights.
The Lanham Act, 15 U.S.C. §§ 1051 et seq., was enacted by Congress in 1946, and it created the national system of trademark registration as we know it. To qualify as a trademark, it must have two characteristics: it must be in use in commerce and it must be distinctive.
Putting aside that Taco John uses its trademark of Taco Tuesday, the second requirement is in line with what Taco Bell is arguing in its petition for cancellation. A person must be able to identify and distinguish a particular good from the source (of the registration) and not another. In other words, I need to be able to know that Taco Tuesday was Taco John's (which I didn't).
Trademarks are generally divided into four categories of distinctiveness:
- arbitrary/fanciful: inherently distinctive
A good example is "Apple" computers. Apples and computers have nothing to do with one another.
- suggestive: implies
A good example is "Netflix" streaming service. This doesn't necessarily outright say that Netflix makes its own television and movies that it streams online, but it is highly suggestive.
- descriptive: can only establish a trademark if it acquired a secondary meaning in the minds of the public
An example is "Vision Center" for people to get eyeglasses. This phrase is almost too generic to be a trademark, but it acquired distinctiveness over time with continued use.
- generic: can either be too generic at the onset, or can become generic with repeated use over the course of many years
Taco Tuesday would be a great example of a generic mark, which is what Taco Bell is fighting. Aspirin, elevator, and zippers are also good examples. I bet you didn't know they were once trademarked.
I think Taco Bell has a very strong case. Before this controversy, how many people actually knew that Taco Tuesday was trademarked? And that is the very essence of what "too generic" means.